“The idea really behind a trademark registration is gaining exclusive right to the use; obtaining a right to use and promote your brand for your product or service. The Hashtag phenomenon switches this up because the idea is you want others to use your hashtag/s and promote your business and brand through that use,” – Jacqui Pryor, Mark My Words Trademark Services Pty Ltd.
A new client of ours recently told us a story about how she was threatened with legal action for using a hashtag on Instagram which was claimed to have been trademarked. Unbeknownst to my client, #sayitwithacandle wasn’t only a creative phrase which she believed to have originally thought of. It was also the name of another Australian based candle company, who had trademarked this phrase as their business name.
Although this happened prior to the client coming to Content Savvy to take advantage of our Instagram services, we thought many of our readers could benefit from her experience. Our initial reaction was – ‘WHAT? That doesn’t sound right! Aren’t hashtags for public use?’
Turns out, trademark law in regards to hashtags is a little more complex. This is why we decided to pick the brains of Jacqui Pryor, Trade Marks Attorney & Director at Mark My Words Trademark Services Pty Ltd. Read on for our Q&A with the expert, so you don’t get caught out online!
Q: Is it possible to trademark hashtags used on social platforms such as Instagram?
If so does the trademark take the form of the phrase in its entirety INCLUDING the actual ‘#’ symbol?
A: The short answer is yes, it is possible to register hashtag based trademarks. In some cases the trademark will include the # symbol; in others, it would be the phrase/name/word etc that follows the symbol.
To register a hashtag trademark, the same criteria would apply during examination as would apply in more traditional type trademarks such as names and logos. A trademark by definition is a ‘sign’ that one person uses to distinguish their goods/services from the similar goods/services of others.
So, if a ‘hashtag’ is being used as a trademark – e.g the ‘brand’ of a product or service, so as to distinguish that product or service from others, then absolutely trademark registration should be considered, and in that case, yes, you would include the actual # symbol if that’s a part of the brand.
The ‘#’ symbol is a part of the actual brand, and as such it has been included in the trademark registration.
The name and the associated logo would meet the definition of a trademark; it is the name and logo being used to distinguish our services from others in the same field. Our trademarks do not include a ‘#’ symbol – so, even though we may use #contentsavvy on social media, we would not include a ‘#’ symbol in any trademark application seeking to register. We would focus on the actual ‘brand’ Content Savvy.
Q: In what countries do trademarks apply if registered in Australia?
A: Trademark registration is country by country for the most part. Trademark infringement (e.g. use by others) typically only occurs if that other person is using it ‘as a trademark’ – again, being that they are using the same or similar to distinguish goods/services.
So, if you registered a trademark for (hypothetically) #ContentSavvy here in Australia, it’s only going to amount to infringement if someone else uses #ContentSavvy (or something confusingly similar), in Australia, for similar services, in the course of trade and as a trademark. Someone using it to share your posts for example, or to contribute to your ‘#’ thread, is not using it as a trademark, so that’s unlikely to infringe. Someone using it overseas as a ‘brand’ is not going to infringe unless they are using in your country of trademark infringement.
The idea really behind a trademark registration is gaining exclusive right to the use; obtaining a right to use and promote your brand for your product or service. The Hashtag phenomenon switches this up because the idea is you want others to use your hashtag/s and promote your business and brand through that use.
Q: There’s a lot of conflicting information out there – hashtags are commonly considered for use, by the public, within a public domain (such as Instagram). Is it really enforceable in a court of law, to prosecute someone who has used a ‘trademarked’ hashtag? Are there any Australian precedents?
A: It really comes back to some fundamental parts of trademark law.
In Australia – a trademark is only infringed if someone without authorisation uses it as a trademark in the course of trade… in simplistic terms – using it as a brand for products/services. If the person is not using it ‘as a trademark’ it won’t infringe. This is the same for any type of use, including hashtags.
Each and every case of a possible infringement needs to be reviewed on its own merits; hashtags are no different.
Consider a well-known brand, such as Google. If a consumer was to incorporate #google into a social media post, where they’re discussing a new piece of software they’re using or a game that they’re playing and enjoying, they’re not amounting to trademark infringement (at least based on AU laws, as well as many other country’s laws). This is because that person is not using #google as a brand of product or service; they’re not using #google to try and distinguish a particular product or service as being theirs, rather than someone else’s.
Where businesses need to be careful, in addition to trademark laws, is whether the way in which they’re using hashtags might be misleading or deceptive. If a business in Australia conducts themselves in such a way, this amounts to breaches of Australian Consumer Laws.
An example would be filling your Instagram pages and posts with pictures and stories, alongside a range of hashtags that indicate a connection to another company, brand or product that doesn’t exist. Eg: Using #officialgooglepartner to promote your business when you are not an official partner of Google companies. Potentially then, the brand owner may have grounds to request you cease use of hashtags in that way.
Q: What can small businesses do if they are threatened with legal action by another company claiming that use of their hashtag is illegal due to it being trademarked?
A: Seek professional advice before reacting or responding. There will be times where a use of a ‘#’ could amount to trademark infringement, and depending on circumstances may amount to other unlawful conduct such as misleading conduct or common law passing off.
Any type of infringement in this space, whether based on use of a hashtag or not – should be assessed on its own merits as there are various factors involved in coming to a determination as to whether there is or is not cause for concern. Some of these (noting this is not an exhaustive list or a replacement for legal advice) include:
- Where are the respective parties located?
- What are the nature of goods/services promoted by the respective parties?
- Is the hashtag being used to distinguish a product or service, in a way that a consumer may assume it is promoting that person’s business, product or service rather than the original brand owner?
- Has the company issuing the letter or threat outlined their rights clearly, including details of the trademarks owner?
A big thank you to Jacqui Pryor for taking the time to answer our questions. We hope you find her insights to be of great value. Should you have any further questions regarding Australian trademark law, please contact Mark My Words Trademark Services Pty Ltd.
And should you need some help with your Instagram, including the sourcing and management of your hashtag sets, don’t hesitate to let us know!